New USPTO Director Andrei Iancu: Is the Spring of Inventors Coming?

Xincheng Ma

March 2018

On February 23, former managing partner of the intellectual property firm Irell & Manella, LLP, Andrei Iancu, was sworn in as the new director of the United States Patent & Trademark Office (USPTO).1Iancu Sworn in as USPTO Director, World Intell. Prop. Rev. (Feb. 26, 2018), https://www.worldipreview.com/news/iancu-sworn-in-as-uspto-director-15522. An experienced litigator in the patent litigation field, Iancu bears a high expectation from the public to reform Patent Trial and Appeal Board (PTAB) proceedings and other aspects of the USPTO’s practice.2Gene Quinn, What Should USPTO Director Andrei Iancu Do First?, IPWatchdog (Feb. 11, 2018), http://www.ipwatchdog.com/2018/02/11/what-should-uspto-director-andrei-iancu-do-first/id=93427/.

Born in Romania,3Staff of S. Comm. on the Judiciary, 115th Cong., Questionnaire For Non-judicial Nominees 1, https://www.judiciary.senate.gov/imo/media/doc/Iancu%20SJQ.pdf (Andrei Iancu’s answer to the questionnaire). Iancu received his master’s degree in mechanical engineering from UCLA in 1990, then worked for the Hughes Aircraft Company as an engineer.4Id. After that, he turned toward legal study and received his J.D. from UCLA in 1996.5Id. As the managing partner of Irell & Manella, LLP, he received many recognitions from Chambers USA and many other legal publications.6Id. at 2. President Trump nominated Iancu on August 25, 2017, and he was unanimously confirmed by the Senate on February 5.7Staff of S. Comm. on the Judiciary, 115th Cong., Roll Call Vote 2nd Session, https://www.senate.gov/legislative/LIS/roll_call_lists/vote_menu_115_2.htm.

Part of people’s confidence in Iancu might come from the diversity of his client list.8Gene Quinn, Trump Nominates Andrei Iancu To Be USPTO Director, IPWatchdog (Aug. 26, 2017), http://www.ipwatchdog.com/2017/08/26/trump-nominates-andrei-iancu-uspto-director/id=87362/. On the one hand, he has represented patent owners—for example, TiVo Corporation and Immersion, Corp.—against several big companies and obtained large settlements.9See, e.g., TiVo Inc. v. EchoStar Corp., 646 F.3d 869 (Fed. Cir. 2011); Immersion Corp. v. Sony Computer Ent. Am. Inc., 239 F. App’x 578 (Fed. Cir. 2007). On the other hand, he has also represented accused infringers against patent owners.10See, e.g.,Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371 (Fed. Cir. 2015). According to data from Lex Machina, in district court litigations Iancu was on the side of patent owners in eighteen cases, and on the side of alleged infringers in forty cases; in PTAB trials, he has also represented both petitioner and patent owners.11Quinn, supra note 8. In addition, Iancu has publicly emphasized the importance of balance in the patent system.12Hearing to Consider Pending Nominations Before the S. Comm. on the Judiciary: Sen. Grassley’s Written Questions for Andrei Iancu, 115th Cong. 1 (2017), https://www.judiciary.senate.gov/imo/media/doc/Iancu%20Responses%20to%20QFRs.pdf (Iancu responding to questions for the record).

However, from his testimony during his nomination hearing at the Senate Committee on the Judiciary, there is some hint of his policy preference. Iancu’s opening remarks state, “when patent owners and the public have confidence in the patent grant, inventors are encouraged to invent, investments are made, jobs are created.”13Hearing to Consider Pending Nominations Before the S. Comm. on the Judiciary, 115th Cong. (2017), https://www.judiciary.senate.gov/meetings/11/29/2017/nominations, (video statement Andrei Iancu to be Under Secretary of Commerce For Intellectual Property And Director of the United States Patent And Trademark Office). While being questioned by Chairmen Chuck Grassley about his position regarding “patent trolls,” he responded that no abuse should be tolerated, but “we really do have to be careful, as they say, not to throw out the baby with the bathwater.”14Id.

One topic Iancu might address is the reform of PTAB proceedings. He co-authored an article, published in the Journal of the Patent & Trademark Office Society, addressing whether PTAB should be able to decide indefiniteness of the challenged claims before and during inter partes review (IPR)..15See Andrei Iancu et al., Indefiniteness in Inter Partes Review Proceedings, 98 J. Pat. & Trademark Off. Soc’y 4 (2016). He also co-authored an article, published in the American Intellectual Property Law Association Quarterly Journal, concluding that IPR proceedings can be “from helpful to arguably detrimental.”16See Andrei Iancu et al., Inter Partes Review Is the New Normal: What Has Been Lost? What Has Been Gained?, 40 AIPLA Q.J. 539 (2012). Current criticism about PTAB’s high rate of institution and invalidation seems to support his assertion.17Gregory Dolin, M.D., Dubious Patent Reform, 56 B.C. L. Rev. 881, 928 (2015). During his hearing, Iancu expressed concern that current statistics require careful evaluation of the current IPR and post grant review (PGR) proceedings.18Hearing to Consider Pending Nomintations Before the S. Comm. on the Judiciary, supra note 13. Because directors have huge control over PTAB proceeding, Iancu can change many parts of it now.19See 35 U.S.C. §§ 316(a)(2)-(4), 326(a)(2)-(4).

Specifically, Iancu concurred with many “well-founded” criticisms, which assert three parts especially worth reconsidering: the claim amendment process, the claim construction standard, and the evidence patent owners can introduce in proceedings ahead of decisions.20Id. Furthermore, in his written response to the Committee’s questions after the hearing, he expressed his intent to direct PTAB to issue more precedential opinions in areas needing them.21Hearing to Consider Pending Nominations Before the S. Comm. on the Judiciary: Sen. Grassley’s Written Questions for Andrei Iancu, supra note 12. He also supported the “expanded panel” practice of PTAB under certain circumstance, analogizing it to the “en banc” procedure at Federal Circuit Courts.22Id. at 11. “If the inventing community does not have confidence in the IP system, then investments do not get made and inventions slow down,” he said, noting that such a slowdown in inventing would “negatively impact the economy.”23 Hearing to Consider Pending Nomintations Before the S. Comm. on the Judiciary, supra note 13. After refusing to talk about IPR’s constitutionality, he said, “I will work with [the] PTO leadership, Congress and stakeholders to identify specific areas that can be improved so that the IPR process can fully realize its intended goals.”24Hearing to Consider Pending Nominations Before the S. Comm. on the Judiciary: Sen. Grassley’s Written Questions for Andrei Iancu, supra note 12.

Iancu has spoken about patentability requirements many times throughout his career and at the hearing. In 2008, Iancu co-authored another article in the Journal of the Patent and Trademark Office Society on the patentability of computer software.25Andrei Iancu & Jeremiah Helm, Code on Disks and Hat Tricks – Is Computer Software on a Medium Really Patentable?, 90 J. Pat. & Trademark Off. Soc’y 97 (2008). Following that, Iancu also published an article in the Northwestern Journal of Technology and Intellectual Property, addressing the Machine and Transformation test rendered by the Federal Circuit and concluding that computer software should not be treated any harsher than any other types of process invention.26Andrei Iancu & Peter Gratzinger, Machines and Transformations: The Past, Present, and Future Patentability of Software, 8 Nw. J. Tech. & Intell. Prop. 247 (2010). At his hearing, Iancu indicated that he will follow the Supreme Court’s opinion, however, he also expressed that it is his priority to give further guidance to USPTO to make the patentability law more certain to inventors, considering the uncertainty of the current case law.27 Hearing to Consider Pending Nomintations Before the S. Comm. on the Judiciary, supra note 13.

In a speech at the USPTO headquarters after being sworn in, Iancu expressed his goal to “help [inventors] protect that which they created,” those “life-changing, history-altering impact innovations,” by “providing reliable, predictable and high-quality IP rights that give owners and the public alike confidence in those rights.”28Ryan Davis, Iancu Sworn in at USPTO, Pledges ‘Reliable, Predictable’ IP, Law360 (Feb. 23, 2018, 7:53 PM), https://www.law360.com/articles/1015559/iancu-sworn-in-at-uspto-pledges-reliable-predictable-ip. Considering the USPTO’s current antipatent position29In sixty-five percent of instituted cases, all challenged claims are invalidated by PTAB. In another sixteen percent of instituted cases, some challenged claims are invalidated. Patent Trial and Appeal Board Statistics (Jan. 31, 2018), https://www.uspto.gov/sites/default/files/documents/trial_statistics_20180131.pdf., it seems like Iancu will at least push the office in the other direction.